Vogue has lost a trademark fight to prevent a similarly named lifestyle brand from trading on its famed reputation. The Bombay High Court recently dismissed a trademark infringement lawsuit that Vogue’s parent company, Advance Magazine Publishers (“Advance”), filed against Just Lifestyle Pvt. Ltd. (“Just Lifestyle”) – an Indian brand that owns the watch, jewelry, and fragrance licenses to an array of fashion brands, such as Calvin Klein, Diesel, DKNY, and Paco Rabbane, in India. Advance argued that Just Lifestyle’s use of the name "JUST IN VOGUE" in connection with retail stores and sales services is in blatant violation of its Vogue trademarks.
According to Advance’s complaint, consumers are likely to be confused into thinking that Just Lifestyle’s "JUST IN VOGUE" stores are connected with and/or affiliated with its magazine, which has maintained an India-specific edition since 2007. Advance noted that it first filed to register the "VOGUE" trademark in India in 1976. While Advance does not hold trademark rights in India in the same classes as Just Lifestyle – namely, those that cover retail stores and sales services – its complaint includes “quotes of Indian celebrities in reputed international publications and decided cases of various courts of the U.S., as well as India have been filed to support the contention that the mark ‘Vogue is a well-known mark entitled not only to protection in the classes in which it is registered but also other classes.’”
The Bombay High Court, however, was not swayed. Siding with Just Lifestyle, it held that the goods of Advance covered by the registered trademark "Vogue" are dissimilar to the goods sold or services offered by Just Lifestyle. With this in mind, the court held that Advance’s argument that the public will likely be confused into believing that Advance endorsed Just Lifestyle’s “JUST IN VOGUE” ventures “is far-fetched considering that magazine publishers are not ordinarily known to be retailing fashion goods and hardly is anyone likely to be misled into believing that the magazine and the fashion goods come from the same source.”
The court further found that Advance did not maintain a “significant” enough presence in India prior to 2004 (the year when Just Lifestyle started using its “JUST IN VOGUE” mark) to support its assertion that Vogue is such a well-known trademark that it should be protected in classes other than the ones in which it is registered. The court noted that the articles that Advance provided to show that its “Vogue” trademark is well known are mostly contained in magazines published in countries other than India.
And the court does not stop there in its smack down of Advance; it goes on to state that the “Vogue” trademark is little more than an ordinary, descriptive word that means “in fashion.” As such, the court found that Just Lifestyle, as a retailer of fashion goods, is entitled to describe their stores as an outlet which deals in fashionable or trendy goods which are "in vogue.” Ouch.